WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NEINVER S.A. v. Giulio Dellapietra
Case No. DNL2016-0008
1. The Parties
The Complainant is NEINVER S.A. of Alcobendas, Spain, represented by Jacobacci & Partners, Spain.
The Respondent is Giulio Della Pietra of Gouda, the Netherlands, represented by Teurlings & Ellens Lawyers, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <thestyleoutlets.nl> (the “Domain Name”) is registered with SIDN through Mijndomein.nl B.V.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2016. On March 21, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On March 21, 2016, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2016. In accordance with the Regulations, article 7.1, the due date for Response was April 13, 2016. On March 31, 2016, the Respondent requested the extension of the Response due date. The Center granted the extension until April 17, 2016. On April 15, 2016, the Respondent submitted a further extension request regarding the Response due date. The Response due date was extended until April 24, 2016. The Response was filed with the Center on April 23, 2016.
On April 28, 2016 SIDN commenced the mediation process. On May 27, 2016 SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Willem Leppink as the panelist in this matter on June 3, 2016. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
The following facts are undisputed:
The Complainant is established in 1969 and is a leader in Europe in developing, investing and managing property. The Complainant’s business includes the development, acquisition, leasing and management of a wide range of property products, including business parks, industrial parks and retail assets. Since 1996, the Complainant’s strategy is focused on outlet centers. It manages fifteen outlet centers, covering a total of 317,800 square meter gross leasable area. Ten of the concerned outlet centers are operated under the name “The Style Outlets” and are located in five countries (one outlet center in France, one in Germany, two in Italy, one in Portugal and five in Spain). At the moment, the Complainant is working on the opening of an outlet center in2017, in Halfweg, near Amsterdam, the Netherlands.
The Complainant holds several European Union Trade Marks for the sign THE STYLE OUTLETS. These trademarks consist of the word element “the style outlets”, along with additional elements. These trademarks will be referred to as the “Trademark”.
Furthermore, the Complainant also owns and operates websites at several domain names, for instance <thestyleoutlets.com>, <thestyleoutlets.es>, <thestyleoutlets.de>, <thestyleoutlets.it>, <thestyleoutlets.fr> and <thestyleoutlets.pt>.
The Domain Name of the Respondent was registered on January 10, 2013. The Domain Name resolves to a website which appears to be maintained by Actiecomité NEE tegen The Style Outlets (Action committee NO against The Style Outlets). On this website, the committee protests the opening of the outlet center in Halfweg. The website under the Domain Name will be referred to as the “Website”.
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following:
First of all, the Domain Name is identical to the Trademark, thus clearly causing a high risk of confusion and association to consumers. The Domain Name fully incorporates the Complainant’s Trademark. The additional element “Amsterdam” in one of Complainant’s trademarks specifically refers to The Style Outlets center directed to the public in Amsterdam. The Domain Name is confusingly similar to this trademark. The public will assume that the Domain Name is related to the Style Outlets in the Netherlands, consistent with the respective domain names registered by the Complainant in Spain <thestyleoutlets.es>, Germany <thestyleoutlet.de>, Italy, <thestyeloutlet.it>, Portugal <thestyleoutlet.pt> and France <thestyleoutlet.fr>.
Furthermore, the Respondent has no rights or legitimate interests in the Domain Name. The Complainant is owner of the Trademark and therefore has the exclusive rights for the commercial use of the sign. The Respondent has no rights or legitimate interests in relation to the Domain Name, because it has no right in the Trademark or in a similar mark or company name registration. The Complainant has not licensed or otherwise authorized the Respondent to use its trademarks and/or exercise its rights conferred by its earlier registrations.
The Website is managed by a group of entrepreneurs and shopkeepers who oppose the arrival of The Style Outlets Amsterdam. This group of competitors of the Complainant, as they admit themselves to be, registered the Domain Name not just primarily, but for the sole purpose of disrupting the Complainant’s activities. This was made explicit by the Respondent himself in various emails sent to the Complainant in response to the latter’s initial attempt to settle this matter amicably.
It is clear that the precise intention of the Respondent is to tarnish and cause prejudice to the reputation of the Complainant’s Trademark, with the explicit objective to avoid and weaken a potential competitor, moreover usurping its trademarks.
Furthermore, there is no bona fide offering of goods or services on the Website, but it is only disrupting the Complainant’s activities. The committee behind the Domain Name is not known by the Domain Name and the Respondent is making an illegitimate commercial use of the Domain Name, by using abusively the Complainant’s trademark and conveying toInternet users negative messages about the Complainant to cause detriment to a potential commercial competitor and involving unfair competition. There is a clear commercial gain, since the Respondent and the committee are competitors of the Complainant.
The use of the Domain Name and Website does not amount to noncommercial criticism. But even in the event of noncommercial criticism, the right of free speech does not extend to legitimate the occupation of a domain name identical to the registered trademarks. For this, the Complainant has presented a list of prior UDRP decisions, including Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 and Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776.
In addition, because there is commercial intent, there is no fair use of the Website. So the Respondent lacks any right or legitimate interest in the Domain Name and has a clear economic interest in tarnishing and damaging the Complainant as a competitor.
Subsequently, the Complainant argues that the Domain Name has been registered in bad faith, since it is clear that the Respondent sought to obtain an unlawful profit in contrast with fair trade rules through such registration. The bad faith in this case is specifically determined by virtue of the circumstances set forth in article 3.2(c) and (d) of the Regulations. First of all, the Domain Name has been registered primarily for the purpose of disrupting the Complainant’s future activities (which is made explicit by the previous email correspondence and the information stated on the Website).
Second, the Domain Name is being used for commercial gain by attracting Internet users to the Website through the likelihood of confusion which may arise with the Trademark as to the source sponsorship, affiliation or endorsement of the Website of the Respondent or of products or services on the Domain Name. The reason for this is that the Respondent is acting behalf of a group of competitors whose goal is to hinder the opening of a new outlet center by the Complainant.
The Website is against the Complainant so it can be inferred that the Respondent was always aware that the Domain Name is identical to the Trademark and is included in various trademarks of the Complainant. In addition, the behavior of the Respondent is disrespectful and infringes fair trade practices and rules, which are the premises for the internal market of the European Union and thus in the Netherlands.
Because of the aforementioned, it is clear that the Respondent has registered and used the Domain Name in bad faith, consisting only of the trademark for which protection was secured both as trademark and domain names by multiple The Style Outlets registrations of the Complainant well in advance of the creation of the Domain Name, unlawfully trying to disrupt the Complainant’s activities and for commercial gain.
Insofar as relevant, the Respondent replied to the Complainant’s contentions with the following:
The Respondent first of all stresses that there are other free domain names that are a variation of the Domain Name, which can be used by the Complainant, such as <the-styleoutlets.nl> and <the-style-outlets.nl>. The Respondent also mentions that there is also another domain name, <thestyleoutlet.nl> that is registered by another party than the Respondent and the Complainant. The Respondent also notes that the Complainant could use the domain name <amsterdamthestyleoutlets.nl>, because the Complainant uses in various countries a domain name that reflects the location of the name of the outlet center, such as “roppenheim.thestyleoutlets.fr/fr”.
Furthermore, the Respondent argues that the Complainant is currently not active in the Netherlands, and that the public in the Netherlands might not be familiar with the other outlet centers of The Style Outlet and the Trademark.
The Respondent also does not hinder the Complainant, since it mentions information about the Complainant’s outlet center and the linked domain names on the Website. In addition, the Respondent points out that there is no registration filed for the single word mark THE STYLE OUTLETS (without any graphic element) and questions whether the extent of the trademark protection is sufficient. The Amsterdam trademark is filed after the registration of the Domain Name and cannot be confusingly similar to the Domain Name, since it is not included in the Domain Name.
The Domain Name is therefore not identical or highly similar to the Complainant’s trademarks and the public will not assume a direct relationship. Especially the content of the Website, stating the pros and cons of the opening of an Amsterdam the Style Outlets and the references made to other outlet stores of the Complainant, demonstrates that there is no direct relationship between the parties.
The Respondent is in no way infringing the Complainant’s rights, hindering the Complainant in the development of the outlet center, trying to impair the Complainant’s trademarks or trying to gain profit by using the trademarks. The Website is established to create a platform where information about the planned outlet center is collected, combining all information pro and contra such outlet center. The Website is in no way negative about the Complainant or defaming about Complainant. The Website is a protest website and is critical about the plans for an outlet center in Halfweg and informs the public thereof, which is a fundamental right.
The Respondent states that it is not generating any income through the Website (also not through sponsored links or banners) and that the Website has a noncommercial nature. The Respondent himself is neither an entrepreneur nor a shopkeeper, nor has interest in such business activity. He also has not registered the Domain Name on behalf of or by assignment of a group of competitors of Complainant. The Respondent is not a competitor, is not using unfair competition and he is not diverting consumers to competitors of the Complainant for a clear commercial gain. The Domain Name is registered purely to inform the public about the proposed settling of an outlet center and the many objections that were raised in response thereto. The Respondent has the right to voice his opinion and to inform the public. In no way was this done “for the sole purpose of disrupting the Complainant’s activities”. For this, the Respondent also referred to Moog Inc. v. Andrew Botte, Sayfa Workwear Limited, WIPO Case No. D2014-1484 in which the panel considered “the preservation of the free exchange of ideas via the Internet to be of the utmost importance”.
According to Respondent, having a protest website can be considered as a bona fide offering of services (by means of article 3.1(a) of the Regulations) in order to make such protest available for the general public. In addition, there is in no proof of the Respondent disrupting the activities of the Complainant.
As Respondent is the committee behind the Website, he is commonly known by the Domain Name and as such he is also mentioned in some of the articles published on the Website. Therefore, the based on article 3.1 (b) of the Regulations, the Respondent has a legitimate interest in the Domain Name.
Finally, the Respondent argues that the Domain Name is not registered or being used in bad faith, because the Respondent did not seek unlawful profit through the registration. This was made clear to the Complainant by the Respondent. The registration was not aimed at disrupting the activities of the Complainant, nor is the registration of the Domain Name or of the Website intended to be against the Complainant. Being critical is allowed, especially in light of the way the Respondent acts. The Website clearly states its purpose in relation to the Complainant’s outlet center and, in addition to the criticism, the Domain Name contains information about the Complainant and its outlet centers. On the Website, the Respondent does not present himself as being (part of) the Complainant, nor does he state that there is any formal relationship between him and the Complainant.
Bad faith is not applicable in this situation, because the purpose is of the Website is clear to the general public. The Respondent also is not disrespectful and does not infringe fair trade practices and rules.
In conclusion, there is no abusive registration of the Domain Name, nor is there a chance of confusion of consumers, since the Website is clear as to its purpose. The Respondent is therefore entitled to use the Domain Name and the Website. He has good reasons and a legitimate interest to host a criticism website under the Domain Name, which criticism is fair and not tortious against the Complainant.
6. Discussion and Findings
Pursuant to article 2.1 of the Regulations the Complainant must prove each of the following three elements:
a. the Domain Name is identical or confusingly similar to:
i) a trademark or trade name protected under Dutch law in which the Complainant has rights; or
ii) a personal name registered in the General Municipal Register (“Gemeentelijke Basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the complainant undertakes public activities on a permanent basis; and
b. the Respondent has no rights to or legitimate interests in the Domain Name; and
c. the Domain Name has been registered or is being used in bad faith.
As a preliminary matter, taking into account the aforementioned, the Panel notes that the arguments of the Respondent with regard to the possibility for the Complainant to use another domain name are not relevant. The use of a similar domain name by another party is also of no importance for this case. It is also irrelevant whether the activities and other outlets of the Complainant are known amongst the public in the Netherlands.
A. Identical or Confusingly Similar
The Complainant is the rightful owner of the Trademark. The Domain Name incorporates an important part of the Trademark, namely the word element “the style outlets”. The Trademark also contains a figurative element, so the Domain Name is not fully identical to the Trademark. However, the Domain Name is indeed confusingly similar to the Trademark as the element “the style outlets” is the dominant textual component of the Trademark.
It is established case law under the Regulations that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the similarity between the domain name on the one hand, and the relevant trademark on the other hand (see: Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Regulations is met.
B. Rights or Legitimate Interests
The Panel has carefully considered the Parties’ evidenced allegations.
The Respondent invokes a right to use the Domain Name for a noncommercial criticism and protest site, in order to inform the public about the Complainant’s plan for an outlet center near Amsterdam.
The Panel acknowledges that the use of a domain name for a genuine criticism site may constitute a right or legitimate interest on a registrant’s part under the Regulations. However, the Panel notes that the main issue in this case concerns not the Respondent’s right to free speech but rather the domain name the Respondent has registered for this stated purpose.In this regard, the Panel cites Frank, Weinberg & Black P.L. v. Allison D’Andrea, WIPO Case No. D2013-15781 : “[t]he issue is not the Respondent’s unquestioned right to criticize; rather, the Panel looks to the legitimacy of [its] right to use the Complainant’s mark to do so”.
The Panel notes that the Domain Name incorporates the Trademark without any clarifying terms. Consistent with the above-mentioned decision and a range of other UDRP decisions, the Panel finds that the right to criticize does not necessarily extend to registering and using a domain name that is identical to (the dominant element of) a third party’s trademark. The Panel further notes that this finding does not leave the Respondent without other options as to the registration of an appropriate domain name for its purposes.
The Panel concludes that the Respondent lacks rights or legitimate interests in the Domain Name for purposes of the Regulation. The Panel is satisfied that the second element of the Regulations is met.
C. Registered or Used in Bad Faith
Article 3.2 of the Regulations states four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
a. the Domain Name has been registered or acquired primarily for the purpose of selling, renting or transferring it to the Complainant or to the Complainant’s competitors for valuable consideration in excess of the cost of registration;
b. the Domain Name has been registered in order to prevent the complainant from using it;
c. the Domain Name has been registered primarily for the purpose of disrupting the Complainant’s activities;
d. the Domain Name has been or is being used for commercial gain, by attracting Internet users to website of the registrant or other online location through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant’s website or another online location.
While these non-limitative scenarios do not fully match the circumstances of the present case, the Panel, noting the absence of bona fides in the registration and use of the particular domain name selected for the Respondent’s purposes, concludes that the the third element of in article 2.1 of the Regulations has also been met.
In this connection, the Panel again refers to Frank, Weinberg & Black P.L. v. Allison D’Andrea, supra: “[…] the deceptive use of the Complainant’s mark, unadorned, makes out bad faith under the Policy. […] As every critic by definition registers its target’s mark with knowledge of the mark owner and the mark, both registration and use in bad faith are established in this case”. The Panel further notes the similar findings by numerous other UDRP panels.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <thestyleoutlets.nl>, be transferred to the Complainant.
Date: June 22, 2016
1 While the Complaint is brought under the Regulations, and not the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarities between the two, the Panel, consistent with earlier .nl findings, considers UDRP precedent relevant to the current proceedings, and will refer to it where applicable.